Tuckerelliss.com

The timeline behind tuckerelliss.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Tucker Ellis LLP v. John Taylor / John T Inc Claim Number: FA2506002158982 PARTIES Complainant is Tucker Ellis LLP ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is John Taylor / John T Inc ("Respondent"), Maryland, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <tuckerelliss.com>, registered with Squarespace Domains LLC. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. The Honorable Neil Anthony Brown KC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on June 3, 2025; Forum received payment on June 3, 2025. On June 4, 2025, Squarespace Domains LLC confirmed by e-mail to Forum that the <tuckerelliss.com> domain name is registered with Squarespace Domains LLC and that Respondent is the current registrant of the name. Squarespace Domains LLC has verified that Respondent is bound by the Squarespace Domains LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On June 5, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@tuckerelliss.com. Also on June 5, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On June 26, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant made the following contentions. 1. The Complainant is a prominent full-service United States law firm that provides legal services and related goods and services and has been doing so since as early as 2003. 2. The Complainant provides its goods and services under the trademark for TUCKER ELLIS. The evidence will establish that the Complainant has acquired its registered trademark rights in the TUCKER ELLIS trademark as a consequence of the registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 4,644,397, registered on November 25, 2014 and numerous other registrations for TUCKER ELLIS (collectively "the TUCKER ELLIS trademark"). 3. The Complainant uses the TUCKER ELLIS trademark to offer its goods and services and has done so since at least 2012. 4. The TUCKER ELLIS trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services. 5. As well as its trademark, the Complainant has registered the domain name <tuckerellis.com> that it uses in its practice and in particular for its website at www.tuckerellis.com, where it markets its aforesaid services under the TUCKER ELLIS trademark. 6. The Respondent registered the <tuckerelliss.com> domain name on June 1, 2025 ("the disputed domain name") well after the Complainant established its aforesaid trademark rights. 7. The disputed domain name embodies, without the consent of the Complainant, the TUCKER ELLIS trademark, with the addition of the letter "s" to the trademark and the addition of the generic Top Level Domain ".com". 8. The disputed domain name is confusingly similar to the TUCKER ELLIS trademark. 9. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because: (a) the Respondent has not used the domain name for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i); (b) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); (c) the Respondent has not used the disputed domain name for a legitimate, noncomnmercial or fair use within the meaning of Policy ¶ 4(c)(iii); and (d) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name. 10. The Respondent has registered and used the disputed domain name in bad faith. That is so because: (a) the Respondent's conduct in registering and using the domain name was calculated to generate confusion between the Complainant and the Respondent and their respective websites within the meaning of Policy ¶ 4(b)(iv); (b) the Respondent registered the domain name and has used it for illegal phishing to solicit personal and financial information from internet users; (c) the Respondent has sought to impersonate personnel of the Complainant and to pass itself off as the Complainant; (d) the Respondent has provided false contact information in the whois record relating to the domain name; (e) the domain name has been flagged in at least one blacklist for use in connection with bank fraud, phishing, malware and/or other suspicious activity; (f) the Respondent has used the Complainant's trademark in its domain name although there is not and has never been any connection between the Complainant and the Respondent; and (g) all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith. The evidence will therefore establish that the Complainant has been able to make out all of the grounds it must establish and that it is entitled to the relief that it seeks. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS 1. The Complainant is a prominent full-service United States law firm that provides legal services and related goods and services and it has been doing so since as early as 2003. 2. The Complainant provides its goods and services under the trademark for TUCKER ELLIS. The evidence has established that the Complainant acquired its registered trademark rights in the TUCKER ELLIS trademark as a consequence of the registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 4,644,397, registered on November 25, 2014 and numerous other registrations for TUCKER ELLIS (collectively "the TUCKER ELLIS trademark"). 3. The Respondent registered the <tuckerelliss.com> domain name on June 1, 2025 ("the disputed domain name") well after the Complainant established its aforesaid trademark rights. 4. The Respondent has used the domain name to impersonate the Complainant's personnel and send illicit emails soliciting personal and financial information, to perpetrate a fraud, infringe and tarnish the Complainant's trademark, pass itself off as the Complainant and to generate confusion. 5. By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the TUCKER ELLIS trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith. 6. Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"). Identical and/or Confusingly Similar The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The Complainant provides its goods and services under the trademark for TUCKER ELLIS. The evidence has established that the Complainant acquired its registered trademark rights in the TUCKER ELLIS trademark as a consequence of its registration of that mark with the United States Patent and Trademark Office ("USPTO"), registered Number 4,644,397, registered on November 25, 2014 and numerous other registrations for TUCKER ELLIS (collectively "the TUCKER ELLIS trademark"). All of the aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order. The Complainant has thus established its trademark rights and hence its standing to bring this proceeding. The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's TUCKER ELLIS trademark. The Panel finds that the disputed domain name is confusingly similar to the TUCKER ELLIS trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the TUCKER ELLIS trademark, with the addition of the letter "s" after the trademark, making the spelling of the last word of the domain name "elliss", rather than "ellis". Such alterations in the spelling of a trademark are rightly regarded as having no significance in the comparison between a trademark and a domain name. Moreover, the addition of the generic Top Level Domain ".com" is ignored in making the comparison because all domain names must have such an extension. When a domain name includes a trademark, as in the present case, it is more likely than not that the domain name is confusingly similar to the trademark. In the present case it is obviously so. Thus, internet users would read the domain name as invoking the TUCKER ELLIS trademark and the well-known legal services offered under it, making the domain name similar to the trademark and confusingly so, because it raises the question whether the domain name is an official and genuine domain name of the Complainant or not. Applying these well-accepted principles, the Panel therefore finds that the disputed domain name is confusingly similar to the TUCKER ELLIS trademark under Policy ¶ 4(a)(i). The Complainant has thus made out the first of the three elements that it must establish under the Policy. Rights or Legitimate Interests It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)). The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. The Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant, namely: (a) the evidence shows that Complainant has never given any licence, permission or authority to the Respondent to use the TUCKER ELLIS trademark or any other similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; thus, it could not be argued that the domain name has been registered and used with any sort of consent by the Complainant; (b) the evidence shows that the Respondent has not used the domain name for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i); there is nothing bona fide in doing what the Respondent has done, namely taking the Complainant's trademark, making a change to it and registering a domain name based on it, and using it to impersonate the Complainant's personnel, especially in connection with financial fraud and phishing; and yet, that is how the Respondent has used the domain name; Exhibit E is an email that an individual received from a person impersonating an employee of the Complainant requesting that the recipient updates its financial banking records with false invoices; thus, the Respondent is attempting to deceive the recipient by sending the financial request email from an email address purporting to be the email address of the Complainant, but actually adopting 'tuckerelliss.com" and carbon copying it to another employee, a member of the Complainant; further, phishing is itself an illegitimate use and cannot give rise to a right or legitimate interest in the very domain name used to perpetrate this subterfuge; also, Exhibit F shows that the Respondent has used the disputed domain name to enable active mail exchange records (MX records) which of course could not be proposed to be for any legitimate purpose and is frequently a sign of a fraudulent use of a domain name; the evidence therefore shows deceptive and misleading conduct that could not give rise to a right or legitimate interest in the domain name; (c) the evidence shows that the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence showing that it is so known and there is no evidence that it is known by any name other than its own; (d) the evidence shows that the Respondent has not used the disputed domain name for a legitimate, noncomnmercial or fair use within the meaning of Policy ¶ 4(c)(iii); there is nothing legitimate in the proven use of the domain name, it is not noncommercial, as it is obviously being used to make money and it is not fair, either to the Complainant or to internet users in general; and (e) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name. The Complainant has thus made out a persuasive and detailed case on the evidence for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name. All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it. The Complainant has therefore made out the second of the three elements it must establish under the Policy Registration and Use in Bad Faith It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. In view of the evidence discussed above, which is equally as applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat here, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration of the domain name and has continued in that conduct after its registration; the registration was clearly an attempt to register a domain name that used the Complainant's trademark and then to use the domain name for phishing and for a fraudulent purpose which was intended to give the impression that emails from the domain address were genuine and legitimate emails for the Complainant, which they were not and which was deceptive. In particular, it is clear from the evidence that, as the Complainant has submitted: (a) the evidence shows that Respondent's conduct in registering and using the domain name was calculated to generate confusion between the Complainant and the Respondent and their respective websites within the meaning of Policy ¶ 4(b)(iv); it was clearly pivotal to the Respondent's scheme that it should promote the notion that it was the Complainant or was authorized by it; this was a false notion, it was promoted to induce the recipients of the foregoing emails to believe that they were genuine and it was done for the illicit financial gain of the Respondent; (b) the evidence has already shown the next ground, namely that the Respondent registered the domain name and used it for illegal phishing to solicit personal and financial information from internet users; (c) the evidence contained in Exhibit E shows that the Respondent impersonated personnel of the Complainant to carry out its subterfuge and to pass itself off as the Complainant; (d) the evidence shows that the Respondent has provided false contact information in the whois record relating to the domain name; (e) the evidence shows that the domain name has been flagged in at least one blacklist for use in connection with bank fraud, phishing, malware and/or other suspicious activity; (f) the Respondent has used the Complainant's trademark in its domain name although there is not and has never been any connection between the Complainant and the Respondent; thus, it could not be argued that the domain name was registered with any sort of consent from the Complainant and it clearly was not; and (g) all of the acts, facts, matters and circumstances to be revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith. Finally, in addition to the specific grounds of bad faith set out in the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the TUCKER ELLIS trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, its customers and internet users in general, passed itself of as the Complainant, infringed and tarnished the Complainant's trademark, and sought to mislead internet users to believe that emails sent under the imprimatur of the domain name were genuine and authorized communications from the Complainant, which they clearly were not. The Complainant has thus made out the third of the three elements that it must establish. The Complainant has also cited several prior UDRP decisions that support all of its contentions. The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks, namely transfer of the disputed domain name. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <tuckerelliss.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Neil Anthony Brown KC, Panelist Dated: June 30, 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.